PATENTS ACT 1970

Intellectual Intellectual Property Rights (IPRs):

Intellectual property rights are the rights given to persons over the creations
of their minds. They usually give the creator an exclusive right over the use
of his/her creation for a certain period of time.
a) legal or statutory right
b) Of exclusive or monopolistic nature
c) Over their creations i.e. products of human intellect

IPRs in general IPRs in the Indian Context|

• Copyright • Patent
• Industrial • Copyright
Property • Trademark
• Industrial Design
• Geographical Indication
•Layout design of industrial circuits
 Patents act 1970-
Amendments
• Patents and designs Act 1911
• The Patents Act, 1970
• Three amendments – 1999, 2002 & 2005

• The 3rd amendment in 2005 has major implications on:

– Introduction of product patent for food, pharmaceuticals,
chemicals and embedded software (software in
combination with hardware, like mobile telephone,
Computer, television) inventions.
– Examination of the “mail box” applications, from January
01, 2005
 Mailbox Applications
When the TRIPS agreement came into force on
January 1, 1995, developing countries like India
were given a grace period of ten years to
introduce ‘product patents’. During this interim
period of ten years, all patent applications were
put in a ‘mailbox’ and were only to be examined
after January 1, 2005. However, Pharmaceutical
companies were allowed to apply for ‘exclusive
marketing rights’ (EMR) for their products for five
years if their product was registered for a patent
and had received marketing rights in any of the
WTO member countries. Practice of EMRs stopped
after January 1, 2005.
 OBJECT OF THE LAW
• Object: To encourage
 Scientific research;
 new technology;
 industrial progress
• Methodology: Opportunity of acquiring
exclusive rights stimulates technical progress in
the following ways:-
1. Encourages research & invention
2. Inducement to disclose invention
3. Offers a reward
4. Inducement to invest capital
 Types of IPR
• Intellectual property rights are
customarily divided into two main
areas:
(i) Copyright
(ii) Industrial property. 
 Copyright
Copyright is the exclusive right to
copy a creative work or allow
someone else to do so. It includes
the sole right to publish, produce or
reproduce, to perform in public, to
communicate a work to the public by
telecommunication, to translate a
work, and in some cases, to rent the
work.
 To what does copyright apply
Copyright applies to all original literary,
dramatic, musical and artistic works.
These include books, other writings,
music, sculptures, paintings, photographs,
films, plays, television and radio
programs, computer programs (software),
sound recordings (such as records,
cassettes, and tapes), performances, etc..
 Copyright Does Not Apply To
Themes, ideas, titles, names, catch-
phrases and other short-word
combinations.
 Industrial property
Industrial property can be divided into two main areas:
• Distinctive signs, like trademarks (which distinguish the
goods or services of one undertaking from those of
others)and geographical indications (which identify a good
as originating in a place where a given characteristic of the
good is essentially attributable to its geographical origin).

• Innovation through research and design, creation of

technology. This includes inventions (protected by patents),
industrial designs and trade secrets.
• Industrial Property thus includes Patents, Trade Marks and
Geographical Indications, Industrial Designs and Trade
Secrets
 PATENT- DEFINITION
Exclusive right for being the true and first inventor of
a product or process, granted by the govt for a limited
period. to exclude others from making, using, selling
or importing the patented product or process without
his consent, in exchange of full disclosure of his
invention .
• Term- 20 years from FILING Date (S.45)
 PATENT- DEFINITION (contd.)
• “Patent" originates from patere: to lay open (to
public inspection)
• Letters patent originally denoted royal decrees
granting exclusive rights to certain individuals or
businesses
• Term not defined in the Patent Act, 1970
 Characteristic Features of Patent
• Characteristic Features of Patent
• 1. Set of exclusive rights
• 2. Right granted to the true and first inventor
• 3. Of a product or process
• 4. Right to exclude others from making, using,
selling or importing the patented product or
process without his consent
• 5.. Right Granted by the state (Sort of agreement
between inventor and the state)
• 6. Right In exchange for Public disclosure of complete
specifications of the invention.
• 7. Right Granted For a fixed period of time (20 years
from the date of filing)
 PATENT v. COPYRIGHT
• Characteristic Features of Copyright
 1. Right over original works of authorship
 2. Protects the form of expression, not the subject matter or
idea
 3. The right is for a longer duration (life of author+60 years)
 4. Copyright is automatically granted
 5. Registration of Copyright helps in proving the copyright.
The burden of proof shifts to the party who denies copyright
– Examples of Copyright:
– Book, Film, Music, Sound Recording, Casette, Tape, Play/Drama,
Performance, Television and Radio Programs, Art, Photograph,
Painting; Computer Program (Software)
 ORGANIZATION STRUCTURE- IP
OFFICES
MINISTRY OF INDUSTRY & COMMERCE

Office of the Controller General of Patents, Designs

& Trademarks

Patent office Kolkatta, Delhi, Mumbai, chennai

GI Registry Chennai
TM Registry Kolkatta, Delhi, Chennai, Mumbai,
Ahmedabad,
Designs wing Kolkatta
 Rights of Patentees
• Exclusive right to prevent third
parties, who do not have his
consent, from making, using,
selling or importing the product or
using the process (S. 48)
• Exceptions (S. 47):
1. Use by govt. for its own use
2. Use for experiment, research or
instructions to pupils
 INVENTION- Definition
Sec. 2(1)(j): ‘Invention’ means a new product or
process involving an inventive step & capable
of industrial application –
1. Process, method or manner of manufacture,
2. Machine, apparatus or other article,
3. Substance produced by manufacture,
And includes any new & useful improvement of
any of them.
REQUIREMENTS OF INVENTION

– NEW: that no other inventor has obtained a patent for the same
invention.

– NON-OBVIOUS that the subject matter of an invention was not

obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.

– USEFUL :that the machine, product, or process is one that can be

used in industry or commerce.

 Novelty
 Non-Obviousness (an inventive step)
 Utility (Capable of industrial application)

–
 NOT INVENTIONS (S.3)
:

1. An invention which is frivolous, or claims anything contrary to

existing natural laws.
2. An invention whose use would be contrary to public order or morality,
or which will be prejudicial to health or environment
3. Discovery of a scientific principle or the formulation of an abstract
theory.
4. Discovery of any living thing or non living substance occurring in
nature
5. Discovery of a new property or use of a known substance, unless it
results in a new product
6. A substance obtained by mere admixture
7. Arrangement or rearrangement or duplication of known devices .
 NOT INVENTIONS (S.3)(contd.)
8. A method of agriculture or horticulture, seeds, etc.
9.• . Any process of medicinal, surgical application on human beings or
animals to render them free of disease.
10. Plants, seeds, animals and biological processes for production or
propagation of plants and animals
11. Computer program, per se, other than its application to industry or
combination with hardware (embedded software)
12. A mathematical method or a business method
13. Literary, dramatic, musical, artistic, aesthetic creation including
cinematic work or television production
14. A method of playing game, presentation of information
15. Integrated circuits
16. Traditional knowledge, or aggregation of traditionally known
components
 NOT PATENTABLE

• Atomic energy 1962(S.4)

• Traditional knowledge
• Scientific principle
• Abstract theory
• Discovery of natural substances
• New form of a known substance
• Mixture of known compounds
• Methods of agriculture
 criteria of patentability
For an invention to become patentable
subject matter must meet the following
criteria -
• i)  It should be new or novel.
• ii) It should have inventive step or it must
be non-obvious 
• iii) It should be capable of Industrial
application.
• iv) It should not fall within the provisions
of section 3 and 4 of the Patents Act
1970. 
 Process of Grant of Patent
1. Application (s 10)
2. Publication (S.11-A),
3. Examination (S.11-B, 12).
4. Pre-Grant Opposition (after publication and before grant)
5. Grant of patent (Notification)
6. Post-Grant opposition (within an year of grant)
7. Maintenance of patent (renewal after three years-renewal fee)
8. Working of patent (Satisfactory availability of the patented product at
reasonable prices-Compulsory licensing by the Controller , if required)
9. Revocation of patent (s 64- wrongfully obtained)
10. Remedies against abuse of patent (S . 66, revocation in public interest by
central govt.-mischievous)
11. Penalties ( S. 120- falsely representing ‘Patented’, ‘Patent applied for’-fine up
to Rs 1 lakh)
12 Infringement (S.108, injunction, either damages or an account for profits)
 Process of Grant of Patent (contd.)
1. Application with complete specifications has to be submitted to Controller
of Patents.
2. The application along with an abstract is published after 18 months of filing,
unless the applicant requests early publication
3. Applicant may apply for examination of his application within 48 months of
filing (31 months incase of applications under Patent Cooperation treaty)
4. The application is then referred to an Examiner.
5. Examiner checks its legality and authenticity and reports to the Controller.
6. If there are discrepancies in the application , objections are raised
which must be answered within an year from the date of report.
7. Any one interested can object after the publication and before grant of the
patent
 Process of Grant of Patent (contd.)
8. Grant of the patent is notified in the Official Gazette, Patent
Office journal published every week
9. Post grant objections can be made within an year of grant of
the patent
10. Maintenance (renewal)fee has to be paid after the third year
11. Lapse of the Patent on failure to renew, restoration within 18
months from the date of lapse on payment of fee
11. Controller may grant ‘compulsory licence’ if the patent is not
working (product is not available in sufficient quantity at
reasonable prices).
12. PATENTEE CAN SELL OR ASSIGN HIS PATENT TO
OTHER PERSONS
APPLICATION WITH COMPLETE- SPECIFICATIONS (S. 10)
• Patent application- specifications
1. Name of the inventor
2. Address
3. Name of the assignee, if any
4. Title of the invention, sufficiently indicating the subject matter
5. Subject matter, object & purpose: to enable a reasonably well
informed artisan to make the patented thing at the end of
protected period.
6. Prior art, full description of the invention, its operation and
use
7. model or sample (if the Controller requires), etc.
8. Best method of performing the invention
 APPLICATION WITH COMPLETE-
SPECIFICATIONS (S. 10) (contd.)
9. Claims: defining scope of invention
10. Abstract, providing technical information
11. If the applicant mentions a ‘biological material’ in the
specifications, he should deposit the material with an
‘international depository authority’ under the ‘Budapest
Treaty’, give name and address of the depository
institution, date and number of the deposit of the material
in that institution. He should disclose the source and origin
of the biological material( There are 34 authorised
‘international depository authorities’ notified under S 10 of
the Patents Act, including one in India (Chandigarh)-
Microbial Type Culture Collection and Gene Bank
(MTCC)
 complete specification
A patent specification can be prepared by the
applicant himself or his registered and authorized
agent. The patent specification generally
comprises of the title of the invention indicating
its technical field, prior art, draw backs in the
prior art, the solution provided by the inventor to
obviate the drawbacks of the prior art, a concise
but sufficient description of the invention and its
usefulness, drawings (if any) and details of best
method of its working. The complete specification
must contain at least one claim or statement of
claims defining the scope of the invention for
which protection is sought
 provisional specification

 Indian Patent Law follows first to file system. 

Provisional specification describes the nature of
the invention to   have the priority date of filing
of the application in which the inventive idea has
been disclosed. It must be followed by a complete
specification describing the details of the
invention along with a statement of claims within
12 months after filing of the provisional
application.  If the complete specification is not
filed within the prescribed period, the application
is treated as abandoned
 Prior art
• Prior art ( state of the art) is all
information that has been disclosed to the
public in any form about an invention
before a given date. Prior art includes
things like any patents related to your
invention, any published articles about
your invention, and any public
demonstrations.
• If an invention has been described in prior
art, a patent on that invention is not valid.
 Prior art search
How can one find out that an invention is already
patented?
• The person concerned can perform a preliminary search
on:
1. Patent Office website in the Indian patent data base of
granted patents, or
2. Patent Office journal published every week, or
3. Search in the documents kept in the Patent Office Search
and Reference Room, which contains Indian patents
arranged according to international patent classification
system.
4. One can also make a request for information regarding
any patent under section 153 of the Act
 Priority Dates of Claims of
Complete Specification (s.11)
• Priority date of the claim is the date
of filing of specifications-provisional
or complete, wherein the matter on
which the claim is fairly based was
first disclosed. Controller can order
post-dating or ante-dating of a claim
under section 9, 17 and 16
depending upon when he thinks the
matter was actually first disclosed.
 PUBLICATION
• Every application for patent is published
after 18 months from the date of its filing
or priority date whichever is earlier,
except where there is a secrecy direction.
 
• Applicant can make a request for early
publication with the prescribed fee.  After
receiving such request the Patent Office
publishes such application within a period
of one month provided the invention does
not relate to atomic energy or defence
purpose.    
 EXAMINATION
• The patent application is examined only on
request.
• The request for examination can be filed within a
period of 48 months from the date of priority or
date of filing of the application whichever is
earlier. 
• Request for examination before expiry of 31
months can be made in respect of the
applications filed under Patent Cooperation Treaty
known as National Phase applications by payment
of the prescribed fee.
First Examination Report (FER)
After examination, the Patent office issues an
examination report to the applicant which is
generally known as First Examination Report
(FER). Thereafter the applicant is required to
comply with the requirements within a period of
twelve months from the date of FER.  In case, the
application is found to be in order for grant, the
patent is granted, provided there is no pre-grant
opposition is filed or pending.  A letter patent is
issued to the applicant.  However, in case a pre-
grant opposition is pending, further action is
taken after disposal of the pre-grant opposition.  
Pre-Grant and Post-Grant Opposition (S.25)
Grounds For Pre-Grant Opposition:
1. Lack of Patentability including novelty, inventive
step and industrial use
2. Non disclosure or wrongful mentioning in
complete specification
3. Anticipation of invention by knowledge oral or
otherwise
Grounds for Post-Grant Opposition:
1. The patentee wrongfully obtained the invention
or any part of it from him
2. Anticipation by previous publication or prior
claim
• Pre-grant Opposition
– Patent applications are published
– Non-compliance
– Non/wrong-disclosure

• Post-grant Opposition
– Within 12 months of grant of a patent
– Misconduct, public display, non-patentable

Patent opposition (contd)…

 pre-grant opposition
• A representation for pre-grant
opposition can be filed after
publication of the application u/s 11A
and before the grant of patent. 
• The grounds on which the
representation can be filed are
provided u/s 25(1) of the Patents Act
1970.
• Grounds (Sec. 25):
1. Obtaining the Patent wrongfully
2. Prior publication
3. Prior claim in a concurrent application
4. Prior public use or knowledge in India
5. Obviousness or lack of inventive step
6. Non-patentable invention
7. Insufficient description of the invention
8. Failure to disclose information relating to foreign
application
9. If convention application, not made within
prescribed time
 STAGES IN THE GRANT OF PATENT

After filing the application for the grant of patent:

1. Applicant may make a request for early publication of his application and
an abstract of application ( Publication before 18 months from the date of
filing or date of priority, whichever is earlier) (S.11-A),
2. A request for examination is required to be made by the applicant or by
any other interested person and thereafter it is referred by the Controller to
an Examiner for report (S.11-B, 12).
3. ‘Prior Art Search’ for Anticipation by Previous Publication and Prior
Claim( Prior Art search) (S.13)
4. First Examination Report is issued and the applicant is given an
opportunity to correct deficiencies within the prescribed time.
 STAGES IN THE GRANT OF PATENT (contd.)
5. Power of Controller to direct revision of application if
specification relate to more than one invention or as respects
post-dating or ante-dating of application (S.16,17)
6. Power of controller to direct the applicant to insert a reference to
the other specification by way of notice to the public in the
applicants complete specification in case of anticipation by
prior claim or potential infringement (S.18, 19)
7. When all the requirements are met, the patent is granted and
notified in the Patent office Journal.
8. However before the grant of patent and after the publication of
application, any person can make a representation for pre-
grant opposition.
9. Post- grant opposition, within one year from the date of
publication of grant [S. 25 (3)]
 PATENT INFRINGEMENT

• A patent is not infringed until proven

otherwise
• onus or burden of proving
infringement is on the patent owner
 Infringement- Jurisdiction, Burden of Proof

• Jurisdiction-District Court (S.104)

• If the defendant makes a counter claim for
revocation of the patent-High Court
• Burden of Proof (104-A): If the patentee
first proves that the product is identical
then if the subject matter is a process, the
court may direct the defendant to prove
that the process used by him to obtain the
product was different.
 Infringement – Declaration as to Non
Infringement (S.105)
• A suit for declaration as to non
infringement may be instituted if the
patentee neglects or refuses to
acknowledge a declaration that the
use of the process by the plaintiff
does not amount to an infringement
Infringement-Threat of Proceedings (S.106)
• If any person threatens any one by
circulars, advertisements or by
communications-oral or in writing,
with proceedings for infringement of
a patent, the threatened person can
bring a suit for declaration that the
threats are unjustifiable. He may
also seek an injunction and
damages.
 Infringement-Limitation on Damages
or Account of Profits (S.111)
• Damages or an account of profits shall not
be granted against a defendant who
proves that he was not aware of the
patent.
• Mere mention of ‘Patented’ on the article
is not deemed to make everyone aware of
the existence of patent, unless the number
of the patent is also mentioned on the
article
 Infringement-Defences,Relief
(S.107,108)
Defences:
Every ground on which the patent
may be revoked is available as a
defence in a suit for infringement.
Relief:
• Injunction
• Damages or account of profits
 Penalties
• Contravention of secrecy directions relevant for defense
purposes (S.35) or applying for patents outside India
without prior permission of the Controller (S. 39) is
punishable with imprisonment up to 2 years or with fine or
with both. (S 118)
• Unauthorized claim of patent rights: If any person falsely
represents that any article sold by him is patented in India
by using words such as ’patented’, ‘patent applied for’ ; he
shall be punishable with fine up to Rs 1 lakh ( S.120)
• Failure or refusal to furnish information to:
(1) central govt. to use invention for purposes of govt.
[S.100(5)]
(2) Controller regarding the extent of commercial use of the
invention in India as required us 146
Punishable with fine up to Rs 10 lakh (S. 122):
• Practice by non-registered patent agents punishable with
fine up to Rs 1 lakh(S. 123)
 COMPULSORY LICENSE
• After 3 years of patent, anyone can request a
license from the govt. on these grounds
– That the reasonable requirements of the
public with respect to the patented invention
have not been satisfied
– That the patented invention is not available
to the public at reasonably affordable price
– Export of pharmaceuticals to poor countries
 Compulsory Licences
1. Any time after three years of the sealing of a patent any
interested person may apply to the Controller for grant of
compulsory licence on the ground that reasonable
requirements of the public with respect to the patented
invention are not being satisfied at reasonably affordable
price or that the invention is not being worked in India
2. The Controller has to take into account the efforts made by
the applicant for obtaining a licence from the patentee on
reasonable terms and the fact that such efforts were not
successful within a reasonable period.
3. Controller will secure reasonable royalty and other
remuneration to the patentee
4. After the expiration of two years from the date of granting
the first compulsory licence, any person may apply to the
Controller to revoke the patent on the same grounds as
mentioned in the first para.
 INDIAN PATENT OFFICE
• Administered by

 Office of the Controller General of

Patents, Designs & Trade Marks
(CGPDTM)
 ~300 examiners
Patents now granted in 2-3 years
 PURPOSE & STRUCTURE OF
PATENT LEGISLATION
• Balancing of public and private rights
• Structure of the patents legislation
– Scope of patentability
– Exclusion from patentability
– Procedure for grant of patents
– Remedies against abuse of patents
– Exceptions to patents rights
– Remedies against infringement
PATENTS: SOME INTERESTING
FACTS
• More than 90% of patent rights are held in
developed countries
• 95% of patents are not working
• Not all industries are bothered about patents
(E.g. Auto industry)
• Industries keen on Patent-Chemical, Biotech,
IT Sector etc
 sealing of a patent
• When an application for a patent complies with the Act and Rules it is in order for
grant
• and the applicant is notified of the date on which the complete specification of the
• application will be published. For a patent to be granted the applicant must request
• sealing on the appropriate form and pay the required fee. This form must be filed
within
• 4 months of the date on which the complete specification is published, subject the
there
• not being any pending action on the application in any court or before the
Comptroller.
• Following such an action the request for sealing must be filed within 2 months after
the
• action is completed. In all cases an extension of up to 3 months are allowed for
making
• the request for sealing on payment of an additional fee. The patent is prepared on
one
• of the forms set out in a schedule to the Rules and sealed with the Patent Office
seal,
• the date of sealing being entered in the Register of Patents.